A new patent system in Hong Kong is set to come into effect on 19 December 2019 with the enactment of the Patents (Amendment) Ordinance 2016 and the Patents (General) (Amendment) Rules 2019.
The reforms include a number of big changes such as the introduction of a new type of Hong Kong standard patent, changes to official filing and renewal fees, and increased scrutiny of the validity of Hong Kong short-term patents.
Key points to note:
- An original grant patent (OGP) system will be introduced to allow direct filing of Hong Kong standard patents. This new standard patent will undergo a substantive examination by the Hong Kong Patents Registrar to determine patentability.
- The existing standard patent re-registration procedure will remain unchanged.
- Applicants will be able to choose whether to pursue a Hong Kong standard patent via the OGP route or the conventional re-registration route.
- To distinguish between the two types of standard patent, a standard patent filed via the re-registration route will be named a standard patent (R), and a standard patent filed via the OGP route will be named a standard patent (O). There will also be a new file numbering system to help distinguish between the different types of patents.
- A Hong Kong short-term patent will be allowed to have two independent claims instead of one.
- A Hong Kong short-term patent will have to undergo a substantive examination before it can be enforced.
- A post-grant request for substantive examination of a Hong Kong short-term patent may be made by the owner or an interested third party to determine its validity.
- The official filing fees for a standard patent (R) and short-term patent will be reduced, provided they are filed via e-filing.
- The renewal fees for a granted standard patent will be changed.
- It will be prohibited to use a confusing or misleading title or description that suggests qualification in the field of patents such as “registered/certified patent agent” unless the title or description is in relation to a lawfully obtained qualification and the jurisdiction of the qualification is clearly indicated e.g. UK Chartered Patent Attorney.
Original Grant Patent
The biggest change to the standard patent system will be the introduction of a directly filed standard patent, known as a ‘standard patent (O)’, where ‘(O)’ is presumably intended to signify ‘originating’. This new OGP system will allow originating patents to be filed directly with the Hong Kong Intellectual Property Department without the need for first filing a designated patent application in China, Europe or UK.
An application for a standard patent (O) will undergo a substantive examination by the Hong Kong Patents Registry to determine patentability. Accordingly, this type of standard patent application must be first filed before disclosure of the invention or, where priority is to be claimed from a first filed application for the invention, within 12 months of that first filed application.
After grant of a standard patent (O), post-grant amendment may be requested by the owner either before the Patents Registry or the court. In either case, though, a post-grant amendment may be opposed by a third party.
The existing standard patent re-registration procedure will remain unchanged although the name of this type of patent will be changed to ‘standard patent (R)’. Accordingly, applicants of Hong Kong standard patents will have the choice of either the OGP route or the re-registration route.
Revised Numbering System
To help distinguish between the different types of standard patents, a new file numbering system will be introduced with the following format:
(A) Hong Kong Standard Patent Application Numbers
“T” is a single digit denoting the type of application:
- “2” for standard patent (O) application
- “4” for standard patent (R) application with designated patent application not based on PCT application
- “6” for standard patent (R) application with designated patent application based on PCT application
“YYYY” is a four-digit number denoting the year of filing.
“SSSSSS” is a six-digit serial number continuously running among all types of applications.
“C” is a single check digit.
(B) Hong Kong Standard Patent Publication Numbers (or, if granted, Patent Numbers)
“T” is a single digit denoting the type of application:
- “2” for standard patent (O)
- “4” for standard patent (R)
“SSSSSSS” is a seven-digit serial number continuously running among all types of applications.
The following hypothetical examples more clearly demonstrate the new number system:
|Type of application||Application No.||Publication No.|
|Standard patent (O)||22019080001.0||20345678|
|Standard patent (R) non-PCT||42019080003.0||40345680|
|Standard patent (R) PCT||62019080005.0||40345682|
Revised Official Fees
The official filing fee for filing a request to record in respect of a standard patent (R) (stage 1) and a request for registration and grant (stage 2) will be reduced from HK$380 (~US$48) to HK$275 (~US$35) (assuming the application is submitted by e-filing). The official advertisement fee will remain unchanged.
A new set of renewal fees for both types of granted standard patents will be introduced to replace the existing flat rate fee. Similar to other major jurisdictions, the size of the annual renewal fee will now depend on the age of the patent as follows:
- 4th to 10th year of the 20-year term: HK$450 (~US$57)
- 11th to 15th year of the 20-year term: HK$620 (~US$78)
- 16th to 20th year of the 20-year term: HK$850 (~US$107)
Late renewal payment fees for a standard patent will remain unchanged at HK$270 (~US$34).
Annual maintenance fees for a standard patent (R) application will also remain unchanged at HK$270 (~US$34). There will be no requirement for annual maintenance fees in respect of a standard patent (O) application.
The Patents Ordinance and corresponding Rules have also seen significant changes in relation to the Hong Kong short-term patent which is, as the name suggests, a shorter term 8-year patent.
The existing system is straightforward, requiring the submission of a patent specification for the invention and a corresponding official search report. The application undergoes a simple formality examination and is then allowed to proceed to grant. It’s a great option for simple inventions that have a relatively short commercial lifespan. However, due to the nature of the formality examination, it is susceptible to abuse.
The proposed new changes should reduce the likelihood of any such abuse. Whilst the formality examination remains unchanged, the proprietor (or a third party) will have the option of requesting substantive examination of the granted patent to determine its validity. This substantive examination may result in the issuance of a certificate of substantive examination (in the event the Registrar determines the patent complies with all examination requirements) or revocation of the short-term patent (in the event the Registrar determines the patent does not comply with all examination requirements).
Significantly, a Hong Kong short-term patent will not be enforceable until the proprietor has obtained a certificate of substantive examination, or requested substantive examination, or obtained a certificate from the court confirming validity of the short-term patent. Consequently, it is hoped the Hong Kong short-term patent will be less open to abuse.
Another major, but more subtle, change will be the acceptability of a Hong Kong short-term patent with two independent claims. The current system permits only a single independent claim which requires the proprietor to choose between either a product claim or a method claim. With the introduction of this change, proprietors will be able to enjoy the benefits of patent protection for both a product and a method of manufacture or use.
As part of the Registrar’s push to encourage use of its new filing system, the official filing fee for a Hong Kong short-term patent application is to be reduced from HK$755 to HK$545 (assuming e-filing). The filing fee for a paper filed application will remain unchanged.
The amendments will also see the introduction of the option to submit third-party observations in respect of a granted short-term patent or a pending Hong Kong standard patent (O) application. This will allow third parties to comment on patentability/validity and submit relevant prior art without becoming party to proceedings. Whilst this carries the risk the observations may be dismissed without comeback, it will afford third parties some scope to influence the course of a substantive examination and the decision to refuse or revoke a short-term or standard patent (O), as the case may be.
Since a standard patent (R) is based on a designated patent that is granted in an overseas jurisdiction, no third-party observations will be accepted in respect of such patents. However, third parties may be able to influence proceedings in the designated patent office where such observations are permitted e.g. before the EPO.
Patent Attorney Names
If you’ve read my article on patent attorneys in Hong Kong, you’ll know there’s no such thing as a Hong Kong Patent Attorney. As the law currently stand, though, there are no specific provisions preventing the use of such a term.
However, the new changes to the law will prohibit the use of titles or descriptions that might confuse or mislead the public into believing an individual or firm is qualified under the laws of Hong Kong to offer patent attorney services. Such terms include “registered/certified patent agent/attorney”.
Fortunately for Hong Kong based foreign qualified patent attorneys, though, the new regulatory measures will not prevent the use of such terms provided they are clearly used together with the jurisdiction in which an individual has lawfully obtained such qualifications e.g. UK Chartered Patent Attorney.
It is hoped these new regulatory measures will protect the public and pave the way for Hong Kong to introduce a full-fledged regime on regulating local patent practitioners in the long term.
The existing standard patent re-registration will remain relatively untouched, other than a few changes to the official filing fees and the renewal fees.
The introduction of a direct Hong Kong standard patent (O) provides an alternative route to obtaining a 20-year standard patent. Such an option is only likely to be of interest to applicants that desire long-term patent protection in Hong Kong but have no interest in any of the designated patent countries namely, UK, Europe or China.
I expect uptake of this new patent filing option to be slow but it will be interesting to see how quickly and efficiently the Registrar handles the substantive examination of standard patent (O) applications. It will also be interesting to see whether the examiners are a ‘soft-touch’ or will examine applications at least as strictly as the more established and experienced designated patent offices.
As for the Hong Kong short-term patent system, the changes are probably long overdue and should hopefully reduce the likelihood of abuse whilst affording proprietors the ability to obtain more wide-ranging patent protection for their inventions.
In summary, more choice cannot be a bad thing, so we welcome the new OGP system and the corresponding changes to the short-term patent system. Coupled with the new online filing system and the proposed application of the Madrid Protocol to Hong Kong for trade marks, Hong Kong is well placed to provide a great platform for efficiently protecting intellectual property assets for many years to come.